2. The Domain Names and Registrar

The disputed domain names <colchaoortobom.com> and <colchoesortobom.com> are registered with eNom and GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 28, 2011, the Center transmitted by email to eNom and GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 28, 2011 eNom transmitted by email to the Center its verification response confirming that the Respondent Luis Felipe Pinheiro Sym is listed as the registrant of the disputed domain name <colchaoortobom.com> and providing the contact details. On April 30, 2011 GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <colchoesortobom.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 9, 2011 providing the registrant contact information disclosed by eNom and GoDaddy.com, Inc. and inviting Complainant to file a separate Complaint for one or the other of the domain names, and file a short amendment to drop said separately-filed domain name from the current Complaint; or provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity; or submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 14, 2011.

In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a second amendment to the Complaint on May 18, 2011. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on May 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2011. Respondent Luiz Carlos Martins Pinheiro filed three email communications with the Center on June 9, 2011. No formal Response has been filed by any of the Respondents.

The Center appointed Eduardo Machado as the sole panelist in this matter on June 24, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a Brazilian company, MERCANTIL VALE DO ARINOS LTDA of São Paulo, which produces and trades mattresses and foam products, known by its fanciful name and trademark ORTOBOM, which first registration before the Brazilian Patent and Trademark Office (BPTO) was granted on September 22, 1987.

The Respondents in this proceeding are Luis Felipe Pinheiro Sym , Ferro Designer Comércio de Móveis ltda. and Costa Rica Colchões. Ferro Designer Comércio de Móveis ltda. is a Brazilian company, which resells mattresses, known through the fanciful name and trademark COLCHÕES COSTA RICA (which register data, if any, is not contained in the case file).

The domain names in dispute are: <colchaoortobom.com>, registered on January 09, 2010, with the registrar eNom, inc.; and <colchoesortobom.com>, registered on July 11, 2009, with the registrar GoDaddy.com, Inc.

Complainant owns the following registered trademarks, relevant to the case at hand:

Registration nº 820612235, for mark COLCHÕES ORTOBOM, filed on April 17, 1998, granted on November 14, 2000, in international class 17, covering “foams”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 820612243, for mark COLCHÕES ORTOBOM, filed on April 17, 1998, granted on November 14, 2000, in international class 20, covering “mattresses and pillows”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 820612251, for mark COLCHÕES ORTOBOM, filed on April 17, 1998, granted on November 14, 2000, in international class 20, covering “marketing, import and export, distribution and representation”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 820713619, for mark COLCHÕES ORTOBOM PRÓ-SAÚDE, filed on June 09, 1998, granted on April 17, 2001, in international class 20, covering “mattresses, pillows and cushions”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 811873382, for word mark ORTOBOM, filed on January 28, 1985, granted on September 22, 1987, in national class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 814583180, for word mark ORTOBOM, filed on December 28, 1988, granted on November 14, 1993, in national class 40-15, covering “ancillary services to trade in goods, including import and export”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 814583199, for mark ORTOBOM, filed on December 28, 1988, granted on July 27, 1993, in national class 17-10, covering “rubber, plastics and alloys”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 814583202, for mark ORTOBOM, filed on December 28, 1988, granted on July 27, 1993, in national class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 819097314, for mark BABY ORTOBOM, filed on April 16, 1996, granted on December 22, 1998, in class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 819097357, for mark ORTOBOM DOUBLE FACE, filed on April 16, 1996, granted on December 15, 1998, in class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 819097349, for mark ORTOBOM LIGHT, filed on April 16, 1996, granted on December 15, 1998, in class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 819097322, for mark ORTOBOM SPRING, filed on April 16, 1996, granted on December 15, 1998, in class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

Registration nº 820126004, for mark ORTOBOM PRÓ SAÚDE, filed on July 11, 1997, granted on October 05, 1999, in class 20-15, covering “mattresses, pillows and cushions in general”, in the name of MERCANTIL VALE DO ARINOS LTDA.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain names, <colchaoortobom.com> and <colchoesortobom.com>, are confusingly similar to its trademark ORTOBOM, through which the Complainant is widely known in the Brazilian market and internationally. The Panel notes that “colchão” is a merely descriptive term in Portuguese which means “mattresses”, that does not establish any distinctive character to those expressions; whilst “Ortobom” is a coined term, of relevant originality.

Firstly, Complainant sustains that the First Respondent is a mere representative of the Second and Third Respondents. Complainant argues that the First Respondent was hired as a web designer and administrator for the Second and Third Respondents’ website, through his company, Websym, demonstrating such an allegation with printouts of Websym’s website and of the disputed domain names’ correspondent website, in which Websym’s logo is included. Moreover, Complainant alleges that the Second and Third Respondents are the same entity. Complainant informs that the Third Respondent has the same exact address as the Second Respondent, and the term “Colchões Costa Rica” (Third Respondent’s name) would be actually the fanciful name and trademark of the Second Respondent. For such reasons, Complainant requested the consolidation of the disputed domain names in a single complaint.

Secondly, Complainant asserts that the disputed domain names divert the consumers’ attention, causing market confusion between the employed terms and ORTOBOM, the registered trademark through which Complainant is widely known, that it would detain a “well known status”. The Complainant exposes its enterprise history, demonstrating its relevant performance in the Brazilian and worldwide markets, and its trademark’s broad recognition. Complaintant informs that, even though the Second and Third Respondents resell Complainant’s products, they have no permission to use extensively Complainant’s trademark.

Complainant presents specific data which demonstrates Respondent’s website’s considerable growth in both access and sales volumes, after the registration of the disputed domain names. On the other hand, the number of Internet visitors to Complainant’s website through search engines fell since then, a fact that Complainant reputes to the registration of the disputed domain names. Complainant affirms that Respondent is purposefully using sponsored links in Google’s search engine, as to mislead consumers, causing confusion about the relationship between their companies and trademarks.

Complainant further contends that this particular use of the disputed domain names would not be justifiable through the argument of a reseller’s proper use of the reselling product’s trademark, for Respondent does not meet some of the specific requirements: Respondent does not use the site for selling exclusively ORTOBOM products; Respondent would not sufficiently disclose its relationship with the trademark’s owner – as argues the Complainant, because Respondent uses sponsored links in Google’s search engine, supposedly to mislead consumers; the use of multiple similar domain names would be an attempt to corner the market.

Complainant attests that Respondents act in bad faith, for ORTOBOM would be a well-known trademark; that despite the contacts made by Complainant, there was no initiative to resolve the dispute, even though one Respondent acknowledged the communication; that, in spite of receiving a cease and desist letter from Complainant, Respondents insist in registering similar “.br” domain names; that the Respondents never replied to the cease and desist letter; that the Respondents would be incurring in the prima facie evidence of bad-faith determined by paragraph 4(b) of the UDRP, as to employ the disputed domain names in order to confuse the consumers about the relationship between Respondents and Complainant’s trademark, for commercial purposes; at last, Complainant concludes that the similarity between both companies’ logos would evidence such intention.

Complainant claims that Respondent has his own trademark, COLCHÕES COSTA RICA, distinct from the mark employed by the Complainant, ORTOBOM, but this distinct trademark does not justify Respondent’s use and registration of the disputed domain names.

B. Respondents

The Center has received only an informal response from the Second Respondent, Costa Rica Colchões, represented by Luiz Carlos Martins Pinheiro. Respondent filed three emails, all of which were identical and in Portuguese.

Respondent alleges that the disputed domain names are used with the sole purpose of reselling ORTOBOM products, with that company’s consent. Respondent’s logo would be of clear use in the website, and the disputed domain names would be used solely with promotional intent, such as a “hot site”.

Complainant, according to Respondent, never before objected to such use of the disputed domain names, even though it had knowledge of the use.

Respondent states that it never intended to divert consumers’ attention or to employ illegal means in order to obtain a market advantage in detriment of Complainant’s goodwill. Respondent sustains its bona fide action alleging that it believed it could employ the disputed domain names for such promotional uses, in behest of its role as reseller. Respondent informs that it is attempting to contact Complainant’s board in order to settle a friendly solution.

Furthermore, Respondent states that it has no interest in litigating with Complainant, and that it would transfer the disputed domain names without any further claims, as long as the companies establish proper contact and after Complainant clarifies the circumstances involved in such transfer.

6. Preliminary Issues

A. Multiple Respondents

On May 9, 2011 the Center sent a communication to Complainant reporting that the Center had been informed by the concerned Registrars that the registrants of the disputed domain names were different from those named in the Complaint. The Center made reference to paragraph 3(c) of the UDRP Rules which provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”, and requested the Complainant to do one of the following:

- file a separate Complaint for one or the other of the disputed domain names, and file a short amendment to drop said separately-filed domain name from the current Complaint; or

- provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity.

In response to such communication, Complainant filed an amendment to the Complaint, in which it basically alleges that all Respondents are, in fact, the same entity or acting under orders of the same entity and therefore added the names of both registrants informed by the respective registrars.

Firstly, Complainant sustains that the First Respondent is a mere representative of the Second and Third Respondents. Complainant argues that the First Respondent was hired as a web designer and administrator for the Second and Third Respondents’ website, through his company, Websym, demonstrating such an allegation with printouts of Websym’s website and of the disputed domain names’ correspondent website, in which Websym’s logo is included. Moreover, Complainant alleges that the Second and Third Respondents are the same entity. Complainant informs that the Third Respondent has the same exact address as the Second Respondent, and the term “Colchões Costa Rica” would be actually the fanciful name and trademark of the Second Respondent. For such reasons, the Complainant requests the consolidation of the disputed domain names in a single complaint.

The Center has made a study of UDRP panel decisions and published an “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition” (“WIPO Overview 2.0”). See “http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#111”. In paragraph 4.16, the Center informs that WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

According to the panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,
WIPO Case No. D2010-0281, “paragraph 3(c) of the Rules was adopted prophylactically with consideration to the efficiency of the summary administrative proceeding provided for under the Policy. Consolidation of disputes involving multiple domain names belonging to a single domain name holder would seem more likely to involve common questions of fact and law, be less complex, and thus in general be better suited for the expedited dispute resolution process contemplated by the Policy. At the same time, however, panels are empowered under paragraph 10(e) of the Rules to consolidate multiple domain name disputes, and consolidation under paragraph 10(e) may be appropriate when doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy. (citations omitted) It is of course axiomatic that a panel should not permit consolidation of multiple domain name disputes under any circumstances if doing so would unfairly favor or prejudice any party”.

The Panel finds that Complainant has submitted consistent evidence that all Respondents are, in fact, the same entity or acting under orders of the same entity. Also, the Response received, sent by Mr. Luiz Carlos Martins Pinheiro, representing Costa Rica Colchões (Second Respondent), addressed the registration of both disputed domain names and Respondent did not oppose to the consolidation of the dispute. The Panel finds that the present case meets the above criteria set out in WIPO Overview 2.0 and also meets the criteria set in the above mentioned decision.

B. Response and language of the proceeding

The Center has received only an informal response from the Second Respondent, Costa Rica Colchões, represented by Luiz Carlos Martins Pinheiro. Respondent filed three emails, all of which are identical and in Portuguese.

Regarding the language of the proceeding, the Registration Agreement is in English and Complainant filed the Complaint in English.

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” As the Registration Agreement in the instant case is in English, the default language of the proceeding would have been English. However, paragraph 11(a) of the Rules reserves to the panel the authority to determine the language of the proceeding having regard to the circumstances of the case. In view of Respondent’s response in Portuguese, the Panel is now called upon to exercise its authority under paragraph 11(a) of the Rules.

The Panel takes into consideration that the Rules are based on the principles of fairness to the parties and the recognition that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. Such principles apply to the determination of the language of the proceeding. SeeWhirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293.

The Panel notes that both parties are Brazilian companies, with Brazilian representatives and, therefore, all Portuguese native speakers. It should also be noted that the sole Panelist of this case is also Brazilian, and, therefore, able to understand the content of the Response. Therefore, the Panel finds that the acceptance of the Response in a language different from the language of the procedure, in this case, does not pose any damage or unfairness to Complainant. In fact, Complainant has not objected to the language of the Response. It should also be noted that Respondent has not objected to the language of the procedure and, assuming from its Response, was able to comprehend the Complaint, in English. Therefore, the Panel decides to issue this decision in English, which is the language of the procedure.

C. Consent to transfer

In the informal response received by the Center, the Second Respondent states that it consents to transfer the disputed domain names to Complainant, given that certain guarantees were given to him by Complainant. As there were no further communications between the parties to settle the dispute, the Panel understands that Respondent’s consent to transfer was ineffective. Even if Respondent’s consent to transfer was made unconditionally, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.

Therefore, the Panel has analyzed the case under the elements of the UDRP.

7. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith, Policy, paragraph 4(a).

A. Identical or Confusingly Similar

According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the trademarks ORTOBOM and COLCHÕES ORTOBOM.

The Panel finds that Complainant’s registered ORTOBOM and COLCHÕES ORTOBOM trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain name <colchoesortobom.com> is identical to Complainant’s COLCHÕES ORTOBOM trademark and that the disputed domain name <colchaoortobom.com> is confusingly similar to Complainant’s ORTOBOM and COLCHÕES ORTOBOM trademarks. The only difference between Complainant’s registered trademark and the disputed domain name <colchaoortobom.com> is the use of the singular form of the word “colchão” (mattress in Portuguese) rather than the plural form “colchões” (“mattresses” in Portuguese) as encompassed in Complainant’s trademark, which results in the change of the letters “oes” by “ao”.

The Panel finds that the difference pointed above is not enough to characterize this disputed domain name as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,
WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).

The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

The Panels understands that in the present case the analysis of Respondents’ rights or legitimate interests over the disputed domain names and the registration and use in bad faith of the disputed domain names are intrinsically connected. Therefore, the Panel decides to jointly examine the two last requirements of the Policy.

In the present case the first Respondent was hired as a web designer and administrator for the Second and Third Respondents’ website, through his company, Websym. Therefore, the Panel finds that his actions were directed by and done in accordance with the instructions of the Second and Third Respondents. Therefore, the Panel shall analyze the conduct of the Second and Third Respondents, for the purposes of the Policy.

Also, Complainant alleges and has provided enough evidence to prove that the Second and Third Respondents are the same entity. This is not contested in the defense. Therefore, the Second and Third Respondents will be collectively named as “Colchões Costa Rica” herein.

The issue in this case lies in determining whether Colchões Costa Rica’s activities as Complainant’s reseller would grant rights or legitimate interest over the disputed domain names and if such activities exclude a finding of bad faith registration and use of the disputed domain names.

According to WIPO Overview 2.0, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interests in the disputed domain names if its use meets certain requirements. These requirements normally include: (i) the actual offering of goods and services at issue; (ii) the use of the site to sell only the trademarked goods; and (iii) the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.

The Panel finds that, in the present case, Colchões Costa Rica did not meet the criteria set above in the registration and use of the disputed domain names.

The websites hosted under the disputed domain names are not used to sell ORTOBOM products exclusively. On the contrary, they were used to sell Complainant’s products alongside with competing products, identified by trademarks such as CASTOR, PAROPAS, LUCKSPUMA, DUOFLEX, MB, PIERRE CARDIN, TECMAR.

Also, the fact that Respondents have created several sponsored links, triggered by Complainant’s trademarks and which exhibit links to the websites hosted under the disputed domain names, is likely to mislead consumers and to cause confusion amongst them as to real nature of the relationship between the parties.

The Panel also notes that Respondents have registered numerous domain names with variants of the Complainant’s mark, which can be deemed as an attempt to corner the market. Also, the Panel finds that such pattern of registering several domain names which reproduce Complainant’s well-known trademark is as an attempt to prevent Complainant from reflecting its trademarks ORTOBOM and COLCHÕES ORTOBOM in a corresponding domain name, which is evidence of registration and use of the in bad faith, under Paragraph 4(b)(iii) of the Policy.

The Panel finds that, as Complainant’s trademarks are well-known and reputable in its field of activity and also because Colchões Costa Rica is a reseller of Complainant’s products, Respondents knowingly infringed Complainant’s trademark rights when they registered the disputed domain names.

In fact, the Panel finds that Respondents set up a scheme to divert Complainant’s customers, through the registration and use of various domain names reproducing Complainant’s trademarks and through the use of sponsored links. This is not a bona fide use of the disputed domain names, and is further evidence of Respondents’ bad faith registration and use of the disputed domain names.

Complainant has presented consistent evidence demonstrating Respondents’ website’s considerable growth in both access and sales volumes, after the registration of the disputed domain names and, on the other hand, the declination of the number of Internet visitors to the Complainant’s website. The Panel finds that Respondents are purposefully using the disputed domain names, together with sponsored links in Google’s search engine, to intentionally attempted to attract, for commercial gain, Internet users to their web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their web sites and/or sponsored links, which is evidence of registration and use of the disputed domain names in bad faith, under Paragraph 4(b)(iv) of the Policy.

The Panel, therefore, finds that Complainant has established the second and third requirements of the paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <colchaoortobom.com> and <colchoesortobom.com> be transferred to Complainant.